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July 09, 2008

Post by Blog Staff

In a decision last week, the Eleventh Circuiten banc addressed the application of New York Times v. Tasini in the context of a comprehensive CD archive encompassing all National Geographic magazines from 1888 to 1996, called the Complete National Geographic. In a previous decision, a panel of the Eleventh Circuit held the CNG was a privileged revision under 17 U.S.C. § 201(c), and as a result, the owners of various copyrighted photographs were not entitled to additional compensation based on the use of the works in the CNG. Our discussion of the panel decision may be found in this post. The court granted rehearing en banc to further discuss the application of Tasini.

The en banc court also found the CNG to be a privileged revision of the magazines. Unlike the databases at issue in Tasini, the CNG kept the entire layout of the original issues, just adding an introduction and search function. As a result, the original context of the articles was preserved. The Court instead focused on whether the compilation was a "revision of the collective work" or if it constituted an entirely new work. The court concluded that the compilation was a revision, meaning that National Geographic had a "privilege" to use the original articles without paying further royalties to the freelance authors and photographers who had contributed to the original magazines.

More on Greenberg v. Nat'l Geographic Soc'y after the jump.

National Geographic published the Complete National Geographic (CNG) in 1997, a 30 CD compilation of all issues of the magazine from 1888 through 1996. The CNG also included a searchable index, an introductory montage containing covers of some of the past issues, and software for compressing and decompressing the page images stored on the CD. The archived issues are presented on the screen two pages of an issue at a time exactly as they are presented in the print version, including the magazine fold in the middle. Users can "flip" the virtual pages to go to different articles.

The plaintiff, Greenburg, is a freelance photographer who had contributed photographs to four different issues of the magazine. When Greenburg saw his work reproduced in the CNG, he filed suit seeking royalties. Originally, the district court held the CNG was a privileged revision under § 201(c), but a panel of the Eleventh Circuit reversed. On remand, the district court held a jury trial on damages, and awarded $400,000. While the case was on remand, the Supreme Court decided New York Times v. Tasini, where the Court construed the scope of the revision privilege under here), but the court vacated the panel decision and granted rehearing en banc to consider the issue further.

The case turned on the application of 17 U.S.C. § 201(c), which addresses contributions made to collective works. That section provides that, unless there is a transfer of copyright or any of the copyright rights, "the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series." (emphasis added)

Neither party alleged a transfer in copyright or underlying rights, additionally, neither party alleged that the compilation was a "later collective work in the same series." As a result, the issue was whether the CNG compilation was a "reproduction and distribution of the article as a part of the original collective work" or a "revision of the original collective work." Greenberg argued that the compilation was a "new collective work" and, as a result, it was not covered under the § 201(c) privilege.

The court regarded a revision as a "new version" of the work where a version was "a distinct form of something regarded by its creators of others as one work." In addressing whether or not the compilation was a revision, the court focused on the dispositive issue in Tasini, namely, "whether the articles were removed from their original context and now isolated in an entirely different format." The closest example from Tasini was the GPO database, which permitted users to search the archives of the New York Times, and would present the search results as they appeared on the original pages of the newspaper. However, the user could not then "flip" to adjacent pages from the original newspaper from the search results page. As a result, the Court in Tasini held the articles were shown "clear of the context provided either by the original periodical editions or by any revision of those editions," and thus were not privileged revisions under § 201(c). As stated by the Eleventh Circuit (quoting Tasini,emphasis added by Eleventh Circuit):

Thus, the "crucial fact" for the Supreme Court was the databases' ability to "store and retrieve articles separately within a vast domain of diverse texts." The articles were presented to the user "standing alone and not in context."

. . .

"Under § 201(c), the question is not whether a user can generate a revision of a collective work from a database, but whether the database itself perceptibly presents the author's contribution as part of a revision of that collective work."

By contrast, in the CNG, while users can search for terms and be taken to specific portions of magazine issues, the user is also then able to peruse the adjacent pages of the magazine. In this way the CNG behaved like microfiche: while a user can zoom in to a particular article or photograph of interest, the material is presented in its overall original context. As stated by the court:

Aggregating editions or issues of one magazine into a larger collective work of that same magazine is permissible under § 201(c) insofar as the individual contributions are presented and perceivable to viewers in their original context.

The court also held that the addition of some new material, specifically the introductory montage, search function, and zoom capabilities, were not sufficient to take the CNG outside the protection of § 201(c). The addition of new material requires a court to as "whether the new material so alters the collective work as to destroy its original context." Here, the additional material did not disturb the original context, and therefore § 201(c)'s privilege still attached. As a result, the court held the CNG was a privileged revision, and Greenberg was not entitled to royalties from the use of his photographs in the archived issues.

The case garnered two dissents. Judge Birch's dissent focused on the equitable considerations between the publishers and the authors. Essentially, Judge Birch argued it was not equitable to allow National Geographic to derive additional gains from recasting the works without some royalties going to the original freelance authors. From this policy-based beginning, Judge Birch determined that the articles were not revisions, as nothing had been changed in the original articles. Additionally, Judge Birch found that the compilation was not a distribution of the original collective work as it had been aggregated with the other issues. As a result, in Judge Birch's opinion, the compilation was not covered under § 201(c).

The second dissent, by Judge Anderson, focused more on novelty. Because the compilation added the search feature, montage, and compression software, in Judge Anderson's opinion the work was a new compilation rather than a revision to the original work. As a result, it was not covered under § 201(c).

For the full opinion in Greenberg v. Nat'l Geographic Soc'y, click here.

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